Software for web-shops vs. marketing for influencer campaigns
Attorney at Law | Certified
Intellectual Property Law Attorney
The plaintiff is a software company which provides programming services to customers who wish to create a website or shop, as well as to customers who wish to adapt or modify their digital presence. Those sites are also hosted and maintained by the plaintiff and the customers / companies are assisted in the implementation and use of the software.
The plaintiff is the proprietor of the German trade mark ‘incca’, which was applied for on 2 September 1998 and registered on 14 January 1999 under registration number 39850161 and which is registered, inter alia, for “software”. From the overall view with the additionally protected services in Classes 38 and 42 and the plaintiff’s further submission, it appears that the product “software” is specified for online shops and Internet presences in the field of e-commerce and access to data networks and computer banks.
The defendant advertises its marketing services in connection with influencer marketing under the name ‘INCA’ as well as a so-called platform / performance tool for influencer marketing. In the context of those services, the defendant selects (by analogy) influencers whose marketing expertise matches the product to be advertised and the customer’s trade mark. It uses the platform only to the extent that it can present the influencers in question to the customer more efficiently via the platform. In addition, the customer can make his selection in the tool. Once the selection has been made, the influencers present their advertising ideas and content, which the defendant (analogously) screens and pre-selects and which can then be presented to and selected by the customer via the platform. In addition, the tool offers evaluation options to track the success of the campaign.
The plaintiff considered that the defendant’s advertising presence using the sign ‘INCA’ constituted an infringement of its trade mark and company name rights in the sign ‘incca’.
The similarity of the conflicting signs ‘incca’ and ‘INCA’ was undisputed. However, the Regional Court of Cologne denied that there was a similarity of goods and services or sectors. The decision was upheld by the Cologne Higher Regional Court.
The plaintiff is of the opinion that, on the basis of the advertising of the platform / performance tool, which is assigned to the technical or software aspect, the targeted public will assume that the defendant intends to introduce a new method using a special software “INCA”, in which case it also refers to the software as “INCA”.
The Cologne Higher Regional Court, like the Cologne Regional Court, took a different view:
Such an understanding would be contradicted by the fact that the public would easily recognise that the platform / performance tool, as a purely technical tool, did not stand alone but was an integral part of the defendant’s new infuencer marketing method. The platform/performance tool itself was not offered to customers in isolation. The software could not be purchased separately from the defendant. Rather, the defendant only presented the advantages of the platform in order to highlight the resulting benefits for the implementation and control of the marketing campaigns to be managed by the defendant (see para. 85 of the decision). The performance tool was therefore only a technical aid.
The plaintiff’s view would also be contradicted by the fact that it is unusual to trade mark a software which is merely used as a technical aid unless that software also has independent significance and can be marketed on its own. Since, in the present case, the platform’s main function is to simplify and make more efficient the channels of communication, and since it has no particular use without the control content provided by analogy and advertised by the defendant, the public would expect “INCA” to refer to the marketing solution as a whole and not also to a trade mark for the underlying software.
After all, not every software offering is similar to a software-based service offering.
The plaintiff’s claim based on the company name ‘incca’ was also to be denied, since the necessary proximity to the industry for a likelihood of confusion was lacking:
The fact that the defendant used a particular software was not decisive in determining the proximity to the sector or activity since the focus was on the services it provided to its customers and not on the means (in this case, the software used).
Ultimately, the decisive factor was that the defendant did not sell any software products, but only offered its influencer marketing strategy. The offer of software products for online shops and websites, on the one hand, and the offer of managing the influencer marketing campaigns, on the other hand, did not have any points of contact that would suggest a proximity to the industry.
Comment
The decision of the Regional Court / Upper Regional Court of Cologne is to be welcomed. Software products are used in almost all areas of business. A finding of similarity between the software for an application that has nothing in common with the software-based service offered by a third party would clearly go too far, so that in these cases a similarity of the goods or services must be denied.